Nike to Lil Nas X: Go to Hell

so mr product studios teamed up with rapper lil nasdaq to modify some nike shoes that were made with a splash of real human blood nike says just don't do it and following in the footsteps of cultural icons like 17th century poet john milton and madonna the singer not the other one lil nazex dropped a music video where he evokes satan's fall into hell by descending into hell himself via stripper pole i don't think that is actually in paradise lost but along the way little nasex wears modified nike air max 97s mischief product studios was responsible for modding the shoes adding occult references like 666 a pentagram bible verses and red ink oh and of course the midsole of each shoe contains exactly one drop of human blood but when mischief offered 666 pairs of shoes for sale nike responded quickly by suing mischief for trademark infringement so the question is what the hell is going on [Music] sponsored by skillshare hey legal eagles it's time to think like a lawyer because the devil is in the details and what is going on with this suit what does it mean for sneakerheads in general is it illegal to modify a consumer product and resell it does this mean that you can't sell modified nikes anymore or any other kind of modified clothing well we're going to get into all of that today because this is a fascinating case that just involves just about everything but first a point of clarification because a lot of people think that this case involves copyright and that's simply not the case there are generally three kinds of intellectual property or ip that people think about there's copyright patent and trademark copyright involves things that are expressive things like art books tv shows movies that gets copyright protection then there's patents that tends to cover useful items things like inventions and then finally that leaves trademark which is meant to protect the consumer public it's meant to uh show people where things came from by creating brands so that they know the source of the things that they are buying and in order to qualify for trademark protection under federal law a trademark has to meet three basic requirements one the trademark has to be distinctive of the source of the goods or services to which it is affixed number two the trademark must not be disqualified from protection by various statutory bars to protection number three the trademark has to be used in commerce the purpose of trademark is to identify the source of goods to ensure that consumers actually know where their products come from in other words trademark holders get protection from people and companies who would sell knock-off goods it's all about protecting the consumer public and that's what this whole lawsuit is about nike has invested billions of dollars into its brand and is trying to protect the strength of the swoosh and the nike word mark so that people aren't confused and people don't think that nike created some shoes that are endorsed by satan you can sort of understand where they're coming from on that and in nike's lawsuit it immediately dissociates itself from the satan's shoes mischief is currently taking orders for the shoes it refers to as the satan shoes which are customized nike air max 97 shoes that mischief has materially altered to prominently feature a satanic theme this was done without nike's approval or authorization and nike is in no way connected to this project so nike brings a bunch of claims and the first of which is garden variety trademark infringement in violation of 15 usc 1114 and nike claims that mischief products violated nike's trademark by manufacturing and selling satan's shoes so how do you prove trademark infringement well to prevail on a claim of trademark infringement a company has to show one it owns a valid trademark number two that the defendant used the trademark in commerce without the company's consent and three the defendant's use created a likelihood of consumer confusion the key element is the third one that there is a likelihood that a consumer will be confused about the source of the goods and nike objects that it has no control over the nature and quality of the satan's shoes and that it has a reputation and goodwill that will be damaged if mischief keeps selling these modified nikes and consumers are likely to be confused by the shoes and any defects objections or faults with the shoes that might hurt nike's reputation and nike of course especially objects to the blood in the midsole which could pose a risk of harm to the consumer but this isn't your garden-variety trademark infringement case where some nefarious competitor is creating another product and intentionally creating it in a way that's confusing to people creating a bunch of shoes that have a check mark on it that kind of looks like a nike swoosh instead mischief actually bought nikes they were originally nikes it's just that they modified them after the fact which brings up the most common defense in a case like this which is called the first sale doctrine when people started hearing about this nike suit a lot of people were worried that that meant that if nike can sue you you can't buy a consumer good and then resell it let's say used on ebay or maybe resell it new on amazon but generally the first sale doctrine means that it's legal for an individual to resell a trademarked item after it has been sold by the trademark owner in an authorized sale so when you buy an authentic pair of nikes you can usually do what you want with them in fact anytime you buy a branded good it becomes yours if you want to buy a book and later sell it on ebay the author can't stop you you can keep it forever and maybe give it to goodwill sell it on ebay or throw it in a like it's yours to do with what you want and trademark law is supposed to protect consumers from being deceived about the origin of a product are consumers confused when they buy the genuine article with an authentic trademark generally no they're not and that's why a mark holder can't stop you from reselling a used item that's the whole purpose of the first sale doctrine and there are a couple of exceptions to the first sale doctrine for the purposes of nike's lawsuit the most important one applies when the products sold are materially different from the company's authorized product nike says that its shoes were materially altered to prominently feature a satanic theme and so how do you prove material difference well in 2020 one court described it this way an alteration is material if it changes something about the product that is relevant to a consumer's decision to purchase that product that quote is from a case where maui jim the sunglass manufacturer sued someone who was reselling their sunglasses but they removed the lenses from the frames and replaced them with different lenses generally either plano lenses or prescription lenses the problem from maui jim's perspective was that they had patented the lenses to promise to wipe out glare and uv rays and the skin cancer foundation officially recommended the maui gems as an effective uv filter for the eyes and surrounding skin so maui jim didn't want people buying these modified sunglasses without the protections that they had designed into their original glasses and maui jim successfully argued that by replacing the lenses with something else the this reseller had removed something that factored into a person's decision to buy maui jim frames so to bring it back around to the satan shoes nike is arguing that confusion has already resulted because this unauthorized reseller and modifier of shoes is offering original nike shoes without the associated benefits that nike customers expect and it has been materially modified nike says that adding an extra substance like blood to the midsole of the shoe could pose safety risks to the consumer and of course nike also implies that lots and lots of consumers are disgusted by the ideas of shoes with blood in them and yeah if you're selling nike air shoes they're supposed to have an air pocket in the sole of the shoe and it's actually filled with liquid regardless of whatever that liquid is that kind of seems like a material difference but nike's second claim is for false designation of origin which is generally a fancy name for consumer confusion according to nike consumers are already being misled into believing that nike was deliberately promoting satan's shoes the company can cite hundreds of posts from christians who are now questioning whether nike is promoting satan they can also find plenty of people who object to having shoes made with blood in them and i have to admit when i first saw the headlines for this case i thought nike had manufactured the shoes there's a prominent white nike swoosh on a black shoe i thought that nike had done this collaboration and as nike says as an innovative brand that strives to push the envelope and do the right thing nike knows it may not please everyone at all time but decisions about what products to put the swoosh on belong to nike but on the other hand generally when you're talking about consumer confusion you're talking about point of sale confusion that the people who bought the actual products were misled into thinking that there was some association there and it's actually sort of unlikely that the over 600 people that bought the modified shoe thought that nike had created the shoe it seems like they knew that mischief was the one that modified those shoes so it's hard to argue that they the consumers the direct consumers of these shoes were confused in any other way though on the other other hand nike would argue that regardless of whether these consumers were confused downstream consumers the public at large will think that nike had something to do with his satan shoes and thus potentially not buy nike shoes in the future and then we get to nike's third and my favorite trademark related claim one for trademark dilution and i know i joke on this channel a lot about claims being particularly sexy but this claim is actually literally sexy and we'll get to that in just a second but in 1996 congress enacted the federal trademark dilution act which made it possible for mark holders to obtain injunctions against the use of their marks even if there is no traditional trademark infringement and the ftda gives certain mark holders the right to sue when a third party uses a mark in commerce in such a way that it hurts consumer perception of a famous mark and there are generally two kinds of dilution there's blurring and there's tarnishment and blurring is when a famous mark's distinctiveness is harmed because it becomes or is likely to become associated with a similar mark in a different context so for example if rolex was suddenly stamped on golf balls and hot dogs in addition to watches then there would be blurring of that mark you might associate rolex with hot dogs instead of fancy watches and tarnishment on the other hand happens when the famous mark's reputation is harmed through an association it tarnishment creates a harm to a famous mark by associating it with something that would damage that reputation so normally that's when a famous mark is linked with something that is considered offensive like pornography or drug use and courts are especially hard on expressions that link a product to sex i told you we were going to get actually sexy with this legal claim so for example barbie won a case against a porn company that wanted to have barbie in their url and the dallas cowboy cheerleaders won a case against the movie www's dallas because it used dallas cowboy cheerleader style outfits in a very adult film and a website was not allowed to use the domain name candyland.com to identify porn site because it tarnished and diluted the hasbro candyland trademark associated with its board games but if the subject is not sex then courts are not completely consistent in how they decide whether there is actual tarnishment and dilution so for example in one case parodies involving dog chew toys were protected speech the ninth circuit held that a squeaking dog toy resembling a bottle of jack daniel's whiskey is an expressive work entitled to first amendment protection while a virginia court held that louis vuitton's mark was not tarnished by a company selling chewy futon squeaky dog toys but on the other hand dr seuss was able to stop publication of an o.j simpson trial parody book called the cat not in the hat by dr juice the court found a likelihood of confusion and stopped publication that case involved both copyright and trademark aspects you really could write a whole book on how dr seuss enterprises vigorously defends its rights through lawsuits but in contrast the banned aqua was victorious in a battle with mattel over the song barbie girl where the ninth circuit held that the song about barbie did not turn barbie into a sex object nor did its lyrics tarnish barbie's reputation but nike claims that mischief's wrongful use of the nike asserted marks in connection with his satanic imagery is likely to cause dilution by tarnishment which understandably could theoretically damage nike's reputation and as i said courts take a very puritanical view when it comes to associations with sex but we don't know exactly what the court's going to think about using satanic imagery on a shoe whether that's offensive or unsavory in the same way that pornography or criminality would be but nike probably has a decent chance of prevailing on this so let's talk about mischief's defenses here in its response to nike's motion for temporary restraining order which i'll get to in a few moments mischief says that nike cannot show confusion among sophisticated purchasers of sneakers who all knew all along that this was a collab between lil nas x and mischief with no nike involvement but nike's counter to this is that nike's logo is all over the shoes in question and as for nike's claim that its brand is being tarnished by an association with satan mischief argues about the prior shoes that it created it created a line of jesus shoes white shoes with cross iconography and filled with supposedly blue holy water and says that those shoes were not universally embraced but nike didn't try and enforce their rights against that particular modified shoe and on the contrary many people were outraged by the these jesus shoes and labeled them as sacrilegious and like nike mischief has tweets backing up its position and here's one pointing out that nike is named for the greek goddess of victory which at least one twitter user found to be offensive and here's one saying that the jesus shoes made the user sick and he intended to throw away all of his nike gear so nike can't win with associations with other non-satanic deities and mr's point here is that they can probably find tweets hammering nike no matter what choice they make and people have criticized nike for manufacturing sneakers in china but when nike criticized china's forced labor camps earlier this year chinese celebrities publicly cut ties with the company so nike is frequently the subject of debate and controversy those who are convinced nike is a horrible company are unlikely to be swayed by the satan's shoes and that of course brings us to the first amendment because just because something is a trademark or is involved in commerce doesn't mean that you give up all first amendment rights trademarks of course are meant to protect against consumer confusion but in recent years courts are increasingly likely to find that the first amendment protects speech even when it might naturally result in some confusion and that's a good thing for artists like little nas x and mischief nike of course claims that the satan's shoes are not a piece of art and were not created by artists and are just purely a commercial venture saying well mischief has a first amendment right to criticize discriminatory social norms those norms have nothing to do with the nike swoosh and the nike word mark but at base there's clearly some tension between trying to protect trademarks and one's first amendment right to expression which takes us to the parody defense just as fair use is a defense to copyright infringement parody is a defense to some kinds of trademark dilution claims but parity in the trademark context is not easy to prove the elements that you have to show are one in original host work too the original work must be famous or well known within the particular target audience and three the creator of the derivative work the parody must take only so much of the original work as is necessary to bring to mind the original host work and for the derivative work which conjures up the famous mark must result in a new original work so let's break this down further this is difficult in this context because the parody has to be making fun of a real product here nike shoes it can't just be a parody of something else like religion for example and it has to be obvious to consumers that the parody is making a comment on the real product and the second message must be something like yes these are authentic nike shoes and isn't nike ridiculous with the way they use their brand so there has to be an element of satire joking or reverend commentary that the consumer would understand and this is a really interesting issue for mischief because as we talked about before a traditional trademark case cares about confusion at the point of sale where the people who bought the satan's shoes confused at all about the source probably not the buyers knew that mischief had created a parody making fun of nike itself the argument being that they're making fun of all the collaborations that nike is willing to do that they'll basically collaborate with anyone even jesus or satan and there are collectors who are well aware of what mischief does in fact they may even be aware that mischief once made jesus shoes with holy water in the midsole and nike didn't object and the jesus shoe is interesting because it added a golden jesus on a crucifix as a shoelace charm and mischief also sourced holy water from the river jordan which was apparently blessed by a priest in brooklyn and added it to the soul of the shoe and in a press release mischief founder said that he was commenting on the ridiculous collaborations that nike has done we asked ourselves what would a shoe collab with jesus actually look like obviously it would let you walk on water well how can we do that you pump holy water into the pocket of air of the air max 97s and with that you get the jesus shoe the holiest collab ever and that makes the jesus shoe and the satan shoes feel more like a parody maybe the satan shoe buyers were aware of this history of weird collabs and even saw satan's shoes as an extension of the earlier jesus shoes council for mischief expanded on this argument in the company's tro letter where mischief argues that the shoes aren't mocking religion they are mocking nike's reputation and nike is at once a global icon in a company with a reputation for shady business practices like making shoes using chinese sweatshops and collaborating with just about anyone to make a buck but this logic may not hold up in court nike can respond by saying that sure the 666 consumers who purchased the shoes weren't confused but everyone else on the internet surely was and these people matter because they are future nike consumers who are now confused they are literally saying oh no nike loves satan i have to burn my nikes again and that takes us to the motion for a temporary restraining order nike was lightning fast with this lawsuit filing almost the next day after the shoes were released and the day after that nike moved for a temporary restraining order or an injunction to prevent mischief from doing anything related to the shoes basically nike wanted a temporary and permanent injunctive to prevent mischief from manufacturing transporting promoting advertising publicizing distributing ordering for sale or selling any products including but not limited to the satan shoes under nike marks and or any marks substantially indistinguishable they're from now we've talked about tros a lot on this channel generally the court only will issue this emergency relief when there is irreparable harm that cannot be undone by the court generally the idea is if you can be compensated with money even long after the fact that's not irreparable harm but ip is an area where courts often find irreparable harm it's harm to one's reputation or brand that cannot be undone and that's what nike is saying here that their brand is being tarnished by an association with satan and you can't really undo that after the fact but mischief argues that this is inappropriate because mischief has already shipped 665 of its 666 pairs of shoes with only one pair being held back for a later raffle but it contends that since the shoes have already shipped they've gone out emergency relief shouldn't be granted well nike responded that even if the company did ship all but one of the pairs of shoes the tro would still be necessary to prevent that one other pair of shoes going out and to prevent mischief from benefiting from this harmful and tarnishing uh action that they've taken against nike and nike accuses mischief probably correctly of quickly shipping the orders to circumvent the possible incoming tro and to add injury to insult mischief is now selling a t-shirt bearing the front page of nike's complaint on the shirt that is some creative marketing there and of course nike accused mischief of deliberately trying to stir up controversy by promoting the t-shirt and going forward with the shoe sale despite having noticed that nike believed that this was trademark infringement but at the same time nike didn't technically notify mischief by letter or phone call that it objected to the shoes the company just simply went forward with the lawsuit on the same day of the sale but just like nike the court moved lightning fast and within a day issued a temporary restraining order preventing mischief from really doing anything related to the shoes but here it's hard to unring the bell the shoes are out mischief has really benefited from all of the publicity that it has gotten related to the satan's shoes and the associations have been made now the court hasn't made a determination on the merits a final one it found that nike was likely to prevail if this indeed goes forward but mischief will be able to present all of its arguments even those related to the first amendment issues uh in briefing related to a preliminary injunction and eventually the trial itself but if you want to shoot a satan-themed music video that may or may not be a parody you'll need to learn how to shoot great video and no one does that better than my friend marquez brownlee who has a new class on skillshare called script shoot and edit with mkbhd from initial concept to final cut marquez will share his creative process production workflow and favorite tools like never before or if you want to learn how to make your own satan shoes you could take gigi rogers class sneaker customizing for beginners and if you want to write a blasphemous song you can learn how to play guitar on skillshare with my friend mike boyd's class because skillshare has classes on almost everything from video to business to design skillshare is an online learning community that has tens of thousands of classes on everything and it's the best place to learn on the internet so if you'd like to try out skillshare the first 1000 legal eagles to use the link in the description we'll get a free trial of skillshare premium and after that trial and skillshare is still way more affordable than most online learning platforms with plans starting at less than ten dollars per month plus clicking on that link really helps out this channel so just click on the link in the description to get a free trial of skillshare premium but what do you think is nike going to sue mischief out of existence or is mischief just engaged in first amendment protected parody leave your objections in the comments and check out this playlist over here with all of my other real law reviews where i talk about the legal issues of the day including all of this crazy ip related stuff so click on this playlist and i'll see you in court

Channel: LegalEagle

Views: 536,009

Rating: 4.9594674 out of 5

Keywords: Legaleagle, legal eagle, breaking news, case, congress, court case, crime, guilty, jury, latest news, news, not guilty, political, politics, politics news, scotus, supreme court, the trial, trial, Verdict, copyright, law advice, legal analysis, lawyer, attorney, Real lawyer, Real law review

Id: GuYd4RP0_qk

Length: 21min 44sec (1304 seconds)

Published: Wed Apr 07 2021